Trials@uspto.gov
`571.272.7822
`
`Paper 10
`Entered: February 26, 2025
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PROXSENSE LLC,
`Patent Owner.
`____________
`
`IPR2024-01485
`Patent 8,886,954 B1
`____________
`
`
`
`Before THU A. DANG, KEVIN F. TURNER, and DAVID C. McKONE,
`Administrative Patent Judges.
`
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`Denying Motion for Joinder
`35 U.S.C. § 314; 35 U.S.C. § 315(c)
`
`
`
`571.272.7822
`
`Paper 10
`Entered: February 26, 2025
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PROXSENSE LLC,
`Patent Owner.
`____________
`
`IPR2024-01485
`Patent 8,886,954 B1
`____________
`
`
`
`Before THU A. DANG, KEVIN F. TURNER, and DAVID C. McKONE,
`Administrative Patent Judges.
`
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`Denying Motion for Joinder
`35 U.S.C. § 314; 35 U.S.C. § 315(c)
`
`
`
`
`IPR2024-01485
`Patent 8,886,954 B1
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–29 of U.S. Patent No. 8,886,954 B1
`(Ex. 1001, “the ’954 patent”). Additionally, Petitioner filed a Motion for
`Joinder Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) to
`Related Inter Partes Review IPR2024-00846. Paper 3 (“Joinder Mot.”).
`Petitioner also filed a Supplemental Paper and Notice Ranking Petitions.
`Paper 4 (“Ranking Notice”). Patent Owner filed a Preliminary Response.
`Paper 8 (Prelim. Resp.). With our authorization, Petitioner filed a
`Preliminary Reply. Paper 9 (“Prelim. Reply”). Patent Owner declined to
`file a preliminary sur-reply by our deadline to do so.
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The
`standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” For the
`reasons explained below, we decline to institute an inter partes review of the
`’954 patent. We also deny Petitioner’s Joinder Motion.
`
`
`B. Related Matters
`The parties advise us that the ’954 patent is involved in three district
`court cases, including Proxense, LLC v Apple, Inc., Case No. 6:24-cv-00143
`(W.D. Tex.). Pet. 104; Paper 6, 2. The ’954 patent also has been challenged
`at the Board in the following inter partes review petitions: Google, LLC v.
`
`2
`
`
`
`IPR2024-01485
`Patent 8,886,954 B1
`
`Proxense, LLC, IPR2024-00233 (PTAB) (instituted); Microsoft Corp. v.
`Proxense, LLC, IPR2024-00846 (PTAB) (Petitioner’s Joinder Motion seeks
`to join this trial); Microsoft Corp. v. Proxense, LLC, IPR2024-01327
`(PTAB) (institution denied); Apple Inc. v. Proxense, LLC, IPR2024-01334
`(PTAB) (joined to IPR2024-00233). Pet. 104; Paper 6, 2.
`
`
`C. Evidence
`Petitioner relies on the references listed below.
`Name
`Reference
`Date
`
`Burger
`
`Robinson
`
`Orsini
`
`US 2005/0050367 A1 Mar. 3, 2005 (filed
`Sept. 30, 2004)
`US 2003/0177102 A1 Sept. 18, 2003
`
`US 2004/0049687 A1 Mar. 11, 2004
`
`Exhibit
`No.
`1005
`
`1006
`
`1021
`
`
`Petitioner also relies on the Declaration of Patrick Traynor, Ph.D.
`(Ex. 1003).
`
`
`Burger
`
`D. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 1):
`Reference(s)
`35 U.S.C. §
`Claim(s) Challenged
`1, 2, 4, 5, 7–13, 15, 16,
`§ 103(a)1
`18–24, 26–29
`3, 14, 17
`
`Burger, Robinson
`
`§ 103(a)
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’954 patent has an
`effective filing date before the effective date of the relevant provision of the
`AIA, we cite to the pre-AIA version of § 103.
`
`3
`
`
`
`IPR2024-01485
`Patent 8,886,954 B1
`
`
`Claim(s) Challenged
`6, 25
`
`35 U.S.C. §
`Reference(s)
`§ 103(a)
`Burger, Orsini
`E. Institution of Inter Partes Review
`Petitioner has filed two petitions challenging the ’954 patent, the
`instant Petition (filed October 16, 2024) and a petition in IPR2024-01334
`(filed August 22, 2024). The instant Petition is accompanied by a motion
`seeking to join Petitioner as a party to IPR2024-00846. Joinder Mot. 1. The
`Board has already granted the petition in IPR2024-01334 (“’1334 petition”)
`and joined Petitioner as a party to IPR2024-00233. Ranking Notice 1.
`According to PTAB guidance, “[b]ased on the Board’s experience,
`one petition should be sufficient to challenge the claims of a patent in most
`situations.” Consolidated Trial Practice Guide (“TPG”) 59 (Nov. 2019),
`available at https://go.usa.gov/xpvPF. “Two or more petitions filed against
`the same patent at or about the same time (e.g., before the first preliminary
`response by the patent owner),” the situation we have here, “may place a
`substantial and unnecessary burden on the Board and the patent owner and
`could raise fairness, timing, and efficiency concerns.” Id. Thus, “multiple
`petitions by a petitioner are not necessary in the vast majority of cases.” Id.
`That said,
`the Board recognizes that there may be circumstances in which
`more than one petition may be necessary, including, for
`example, when the patent owner has asserted a large number of
`claims in litigation or when there is a dispute about priority date
`requiring arguments under multiple prior art references. In such
`cases two petitions by a petitioner may be needed, although this
`should be rare.
`Id. In such situations, a petitioner is invited to identify, either in its petition
`or a separate ranking paper (Petitioner filed the Ranking Notice):
`
`4
`
`
`
`IPR2024-01485
`Patent 8,886,954 B1
`
`
`(1) a ranking of the petitions in the order in which it wishes the
`Board to consider the merits, if the Board uses its discretion to
`institute any of the petitions, and (2) a succinct explanation of
`the differences between the petitions, why the issues addressed
`by the differences are material, and why the Board should
`exercise its discretion to institute additional petitions if it
`identifies one petition that satisfies petitioner’s burden under
`35 U.S.C. § 314(a).
`Id. at 59–60 (emphasis added). In a separate paper or in the preliminary
`response (Patent Owner provided a Preliminary Response), the patent owner
`is permitted to
`respond to the petitioner and explain why the Board should not
`exercise its discretion to institute more than one petition (if it
`institutes at all). Among other issues, the patent owner should
`explain whether the differences identified by the petitioner are
`directed to an issue that is not material or not in dispute. If
`stating that issues are not material or in dispute, the patent
`owner should clearly proffer any necessary stipulations. For
`example, the patent owner may seek to avoid additional
`petitions by proffering a stipulation that certain claim
`limitations are not disputed or that certain references qualify as
`prior art.
`Id. at 60–61.
`In its Ranking Notice, Petitioner requests that we institute both the
`’1334 petition and the instant Petition, but ranks the ’1334 petition first and
`the instant Petition second. Ranking Notice 1. Thus, if we decide that
`Petitioner has not provided sufficient justification for instituting two
`petitions, we should deny the instant Petition, as we have already instituted
`the ’1334 petition.
`Petitioner argues that we should institute both petitions because
`“Petitioner’s petitions in the 1334 IPR and the 1485 IPR are . . . materially
`different.” Ranking Notice 2. Petitioner shows that the ’1334 petition
`
`5
`
`
`
`IPR2024-01485
`Patent 8,886,954 B1
`
`challenges a subset of the claims of the ’954 patent based on the prior art
`references Ludtke and Kon, while the instant Petition challenges all 29
`claims of the ’954 patent based on the prior art references Burger, Robinson,
`and Orsini. Id. at 2–3. According to Petitioner, these are “significantly
`different invalidity grounds.” Id. at 3. However, Petitioner does not explain
`why challenging the same patent with different invalidity grounds, without
`more, justifies instituting both petitions.
`Petitioner also argues that “the 1485 IPR challenges additional claims
`not challenged in the 1334 IPR—i.e., claims 8, 9, 11, 20, 21, 28, and 29 of
`the ’954 patent.” Id. at 3. Each of these claims are dependent claims.
`Ex. 1001, 10:5–12:51. Petitioner does not explain in its Ranking Notice
`why the additional claims challenged in the Petition presents a material
`difference.
`One exemplary justification for multiple petitions is “when the patent
`owner has asserted a large number of claims in litigation.” TPG 59.
`Petitioner does not argue that it was impractical to challenge in one petition
`all claims asserted in litigation. Patent Owner argues the contrary, stating
`that, “though this Petition challenges dependent claims 8, 9, 11, 20, 21, 28
`and 29 of the 954 Patent, which were not challenged in the 1334 IPR, Patent
`Owner has not asserted those claims against [Petitioner] in the current co-
`pending litigation. . . . Thus, the only difference between the petitions is a
`challenge to dependent claims not at issue.” Prelim. Resp. 2.
`Petitioner argues that Patent Owner did not clearly proffer a
`stipulation not to assert claims 8, 9, 11, 20, 21, 28, and 29. Prelim. Reply 2.
`According to Petitioner, Patent Owner’s statement that these claims are not
`at issue is “incorrect and misleading” because Patent Owner “would not
`
`6
`
`
`
`IPR2024-01485
`Patent 8,886,954 B1
`
`agree to sign a covenant not to sue [Petitioner] on these claims,” and that
`“Proxense’s litigation tactics result in claims 8, 9, 11, 20, 21, 28 and 29
`remaining ‘at issue’ and the current co-pending litigation is of no
`consequence.” Id. In support of this argument, Petitioner cites to the
`Preliminary Response, at 2. Id. The Preliminary Response says nothing
`about whether Patent Owner would agree to sign a covenant not to sue on
`these claims. Prelim. Resp. 2. And Petitioner does not meaningfully allege
`a concern that these claims will be asserted. Thus, Petitioner does not show
`that the addition of claims 8, 9, 11, 20, 21, 28, and 29 makes the difference
`between the two petitions material. Moreover, Petitioner could have ranked
`the instant Petition, which challenges the additional claim, higher, but chose
`not to for reasons that are not presented here.2 Petitioner does not persuade
`us that the additional challenges to claims 8, 9, 11, 20, 21, 28 and 29 in the
`Petition is material.
`As to the other exemplary justification stated in the TPG, “when there
`is a dispute about priority date requiring arguments under multiple prior art
`references,” TPG 59, Patent Owner represents that “there is no dispute about
`the priority date regarding either combination of references,” and that
`“Patent Owner has not denied that either combination of references
`constitutes prior art,” Prelim. Resp. 2. Petitioner does not argue that there is
`any dispute as to priority date justifying two petitions.
`
`
`2 It is notable that Petitioner does not provide reasons why, should we
`institute on the instant Petition, the 1334 petition still would be justified. In
`other words, Petition has not explained why the challenges presented in the
`1334 petition are materially different from those presented in the instant
`Petition.
`
`7
`
`
`
`IPR2024-01485
`Patent 8,886,954 B1
`
`
`Petitioner argues that it could not have raised both sets of challenges
`in the instant Petition because issues in the instant Petition could not be
`joined to the ’233 IPR that the ’1334 petition sought to join. Prelim. Reply
`1–2 (citing Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321,
`1336–37 (Fed. Cir. 2020)). We appreciate that Petitioner did not draft either
`petition in the first instance, and instead chose to copy petitions to facilitate
`joinder. While it might be the case that Petitioner could not have combined
`the two petitions and still sought joinder, Petitioner still does not provide a
`reason why it should be permitted two petitions. Alleging that the
`challenges presented in the two petitions are materially different, by itself,
`does not show “why the issues addressed by the differences are material.”
`TPG 60.
`We have considered the reasons for two petitions presented in the
`Ranking Notice, but find insufficient argument or evidence to show that this
`is the “rare” case in which two petitions might be needed by Petitioner.
`Accordingly, consistent with the guidance in the TPG, we exercise our
`discretion to deny the Petition under 35 U.S.C. § 314(a).
`
`
`II. PETITIONER’S JOINDER MOTION
`As noted above, Petitioner requests joinder of this proceeding with
`IPR2024-00846. Joinder Mot. 1. As the moving party, Petitioner bears the
`burden of proving that it is entitled to joinder. See 37 C.F.R. § 42.20(c).
`Joinder in inter partes review proceedings is subject to the provisions
`of 35 U.S.C. § 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`
`8
`
`
`
`IPR2024-01485
`Patent 8,886,954 B1
`
`
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`“To join a party to an instituted [inter partes review (IPR)], the plain
`language of § 315(c) requires two different decisions.” Facebook, Inc. v.
`Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First,
`the statute requires that the Director (or the Board acting through a
`delegation of authority) . . . determine whether the joinder applicant’s
`petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect
`joinder, § 315(c) requires the Director to exercise h[er] discretion to decide
`whether to ‘join as a party’ the joinder applicant.” Id. “The statute makes
`clear that the joinder decision is made after a determination that a petition
`warrants institution, thereby affecting the manner in which an IPR will
`proceed.” Id. (citing Thyrv, Inc. v. Click-to-Call Techs., LP, 140 S.Ct. 1367,
`1377 (2020)).
`As we explain above, Petitioner has not shown that we should institute
`a second Petition by Petitioner challenging the ’954 patent. Instead, we
`determine that the Petition does not warrant institution. Accordingly, the
`Joinder Motion fails at the first step, whether the Petition warrants
`institution, and we need not evaluate further the second step, whether to join
`Petitioner as a party to IPR2024-00846.
`Petitioner’s Joinder Motion is denied.
`
`
`9
`
`
`
`IPR2024-01485
`Patent 8,886,954 B1
`
`
`III. CONCLUSION
`We exercise our discretion to deny the Petition because Petitioner has
`not shown that we should institute a second petition by Petitioner
`challenging the ’954 patent.
`Because the Petition does not warrant institution, we deny Petitioner’s
`Joinder Motion.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is denied as to claims 1–29 of the ’954 patent;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2024-00846 (Paper 3) is denied.
`
`
`
`
`
`10
`
`
`
`IPR2024-01485
`Patent 8,886,954 B1
`
`PETITIONER:
`Philip Woo
`Monte Squire
`Daryl Bartow
`Paul Belnap
`DUANE MORRIS LLP
`pwwoo@duanemorris.com
`mtsquire@duanemorris.com
`dsbartow@duanemorris.com
`phbelnap@duanemorris.com
`
`
`PATENT OWNER:
`David Hecht
`JAMES ZAK
`HECHT PARTNERS LLP
`dhecht@hechtpartners.com
`zakx0017@umn.edu
`
`
`
`11
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
